Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Tuesday, 31 August 2004

Since Blogger upgraded its blogging software, the IPKat has become increasingly frustrated at the number of times he has tried to post a blog and has been unable to do so, in whole or part, through repeated inexplicable software failure. He apologises to all his readers for the late delivery or non-delivery of some juicy and exciting blogs.

If anyone knows of a good, easy and reliable blogging software, please let the IPKat know.

Among the books that have recently fallen into the IPKat's clutches is Media, Technology and Copyright: Integrating Law and Economics, by Michael Einhorn. Published by Edward Elgar, this volume consists of a series of chapters that focus on specific issues or areas of concern:

The author, an economic consultant and expert witness who is active in the fields of media, intellectual property and technology, has sought to present an accessible and easy-to-read account of the synthesis of the various topics to which the book's title alludes. By and large he has achieved this aim, perhaps because he has not allowed himself to become bogged down in technical arguments and has allowed the complexities of his subject-matter to unfold in relatively general, accessible terms. The text is clearly addressed to an American readership, but this is hardly surprising since the vast majority of recent technological, legal and policy developments involving the new technologies and copyright have emanated from the United States.

In conclusion, this volume -- which is not only readable but pretty manageable at a little more than 200 pages -- is more than an introduction to the place of modern copyright law within its econo-technological context; it is a pleasurable read.

Monday, 30 August 2004

The IPKat brings you news of a UK registered trade mark opposition that has potential implications for passing off and which ended up with an appeal to the Lord Chancellor’s Appointed Person (LCAP).

Farmacia applied to register a word and device mark containing the words FARMACIA URBAN HEALING in black, white and duck egg blue in Class 3 for toilet and cosmetic preparations; perfumes; preparations for the hair; aromatherapy; deodorants and air fresheners, in Class 5 for herbal remedies and nutritional products; vitamins and minerals; deodorants and in Class 42 for pharmacy advice; medical clinics and surgeries. Meanwhile Pharmacia owned the trade mark PHARMACIA for pharmaceuticals and various medical products and equipment. Pharmacia had used the PHARMACIA mark in the UK from 1962 until 1995, when it merged with Upjohn, at which point it began using PHARMACIA & UPJOHN instead. However, in 2000 it reverted to using PHARMACIA in its UK branding. Pharmacia opposed Farmacia’s application based on the Trade Marks Act 1994 s.5(2)(b) (similar mark, similar goods and confusion), s.5(3) (use that would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark) and s.5(4)(a) (use that would result in passing off).

The Hearing Officer rejected the opposition under ss 5(3) and 5(4)(a) since it had not been established that Pharmacia enjoyed a reputation under the PHARMACIA trade mark in 2000. He based this finding on the facts that (i) PHARMACIA had ceased using the PHARMACIA mark on its own between 1995 and 2000 and (ii) the mark had only been used as a secondary mark. However he allowed the opposition for certain of the goods under s.5(2)(b). Pharmacia appeal against this decision was partially however allowed in part.

In deciding whether Pharmacia had an earlier right that it could rely on to successfully oppose Farmacia’s mark under s.5(4)(a) the LCAP found that:

* A trader may retain the goodwill attached to his business even when he ceases to carry on that business. As long as the goodwill is retained, he can enforce his rights in any name which is attached to that goodwill. Pharmacia had goodwill in its pharmaceutical business by 1995 and that goodwill must have attached to the PHARMACIA trade mark which was used in relation to that business as a whole. While the trade mark PHARMACIA & UPJOHN was used for the next five years after 1995, this did not mean that the goodwill generated under the PHARMACIA mark used alone was abandoned. In fact, it was more likely that the goodwill would be retained by the use of the PHARMACIA element within the composite PHARMACIA & UPJOHN trade mark. This was supported by Pharmacia’s decision to revert to the use of PHARMACIA alone as a trade mark in 2000.
* The continuing goodwill of the PHARMACIA mark could be tested another way. If another pharmaceutical company began using the trade mark PHARMACIA in relation to pharmaceuticals in March 2000, Pharmacia would have been able to prevent such activity by an action for passing off.
* Although PHARMACIA had been used as a house mark in conjunction with other particular product and brand names, by 1995 it had been used on products, promotional literature and advertising and promotional materials in the UK for 30 years and must have become familiar with the wide range of medical professionals and patients with whom Pharmacia had dealings. Additionally, Pharmacia had spent a large amount of time and money in promoting the PHARMACIA mark.
* In order to succeed in a passing off claim, a claimant must show misrepresentation leading to likely damage as well as goodwill. The Class 3 and 5 goods were too different for the registration to be prevented by the law of passing off. However, since the use of the FARMACIA mark on the Class 42 services could lead to confusion, the registration was blocked with respect to those goods.
* There was no reason to come to a different conclusion with respect to ss5(3) and 5(2)(b) of the 1994 Act.

The IPKat says that the principle that a claimant can maintain reputation in his mark for passing off purposes even after he stops using it is well established. However, the idea that use of a mark as a component of another mark can help establish reputation in a mark is more novel.

Sunday, 29 August 2004

Reuters Louis Vuitton has lost the first stage of an attempt to protect its trade mark in New York. The French company has failed in its bid to get an injunction stopping American bag manufacturer Dooney & Bourke using a DB logo in bright colours on black and white handbags. Louis Vuitton had launched a similar range of luggage in October 2002 bearing its LV logo. US District Judge Shira Scheindlin said, in delivering her ruling:

"Louis Vuitton created a new look and now seeks to preclude others from following its lead …If Louis Vuitton succeeds, then it will have used the law to achieve an unwarranted anticompetitive result ... the objective of trademark law is not to harm competition."

The judge found that no evidence of confusion among actual consumers had been shown and there were substantial differences between the two bags that would enable consumers to tell them apart. However, Louis Vuitton can still proceed to trial or appeal the judge’s decision on the injunction.

This case strongly reminds the IPKat of the UK Roho passing off case. In both cases the principle is, if there’s no confusion then free competition must be allowed to continue, even if the defendant has copied the originator of the design.

Got the real thing? How to feed it here Take advantage of the court’s decision and make your own Louis Vuitton bag here How to tell if someone’s make his/her own Louis Vuitton bag here

Saturday, 28 August 2004

Our guest blog on 24 August by Simon Gentry attracted a long and reasoned response from Queen Mary IP Research Institute's John Cahir. John's comments have in turn inspired a riposte from Joff Wild, editor of IAM and a seasoned commentator on the impact of IP rights on the economy. Joff writes as follows:

I have just got back from my summer break and have been catching up with the last few weeks of the IP Kat. As usual, there is a lot of very interesting information and comment. One item in particular caught my eye - Simon Gentry's guest blog on the state of IP in Europe and the response to it from John Cahir of the Queen Mary IP Research Institute.

To be honest, I was very surprised by what John had to say. He downplays the role intellectual property and intellectual property legislation can have in shaping economic development and, in the case of the US, seems to say that the primary drivers of that country's extraordinary technological dominance over Europe in so many spheres is not related to IP very much at all. I think he is wrong and I believe that if he were to ask industry and university leaders in the US they would disagree with him as well.

Much of the US's leadership in areas such as biotechnology, telecoms, software and other high-tech sectors centres on hugely successful collaborations between the private sector and the university sector. These collaborations only became possible following the passing of the Bayh-Dole Act at the beginning of 1981. Bayh-Dole was a purely IP-driven piece of legislation that for the first time enabled the private, finance and academic sectors to work together in a mutually beneficial way to develop patented technology developed in US universities and to build companies that now employ millions of Americans (as well as citizens of countries across the world) and generate hundreds of billions of dollars in revenue each year. It is also worth pointing out that it came into force at a time when the US economy was in serious decline and many doubted the US's ability to compete with countries such as Japan and Germany. Bayh-Dole was recently described by the Economist as the single most important piece of US legislation of the last 50 years. Referring to Bayh-Dole, George Rathmann, the founder of Amgen, said in June 2001: "I have no doubt that there would be no biotech industry today without our patent system."

Just a year after Bayh-Dole, the Court of Appeal for the Federal Circuit (CAFC) was created. This centralised the appeals process in US patent cases and provided much more certainty for patentees. It took much of the randomness out of patent litigation in the US and so gave companies greater confidence to invest money in R&D, to apply for patents and to enforce them if they were infringed. After all, there is little point in pumping huge sums into developing a product if, the moment it comes on to the market or even before, the competition can rip it off without worrying too much about the legal repercussions.

On top of Bayh-Dole and the CAFC, there is the role of the Commissioner of the USPTO. Men such as Bruce Lehman and Todd Dickinson have shown just how significant the post holder can be in shaping IP policy in the US to the benefit of IP owners. Significantly, the USPTO Commissioner is a direct presidential appointee with wide ranging powers not only to effect swift changes to examination regulations when needed (as has been the case over the last 10 years in areas such as, for example, biotech and business method patents) but also to represent US IP interests internationally. In the legislature too, high profile Senators and Congressional representatives make it their business to be well informed about IP. All this is in direct contrast to the state of affairs in Europe, where it has taken 25 years and counting to introduce a Community patent; where it can take two years to introduce fee changes at the EPO and where the head of the EPO is chosen following protracted horse trading between member states of the EPC based not so much on the ability of nominees to do the job but on whether they come from the right country and speak the right languages.

None of this means that the US has it all right. There are many legitimate debates to be had over, for example, patentability criteria in areas such as software; the cost of litigation; and the US's international IP agenda. In addition, the US is one country while Europe is a collection of countries. However, I do not believe it is credible to say that IP has not been a central factor in the huge growth the US economy has enjoyed over the last 20 years. John does Europe and its companies no favours in ignoring IP's impact but, unfortunately, he is one of many on this side of the Atlantic. Whereas the US has spawned the LES, AUTM, the AIPLA, the INTA, the IPO and countless other high profile organisations representing the views and aspirations of IP owners, Europe has produced very few. It means that influencing the decision making process in Brussels and in national capitals is much more difficult. And if IP owners are not helping to shape the debate, those with an anti-IP agenda will instead - just have they have been doing so successfully over recent years. And it is not only in areas such as biotech and software that this is happening: recently 150 out of 450 MEPs voted against a heavily watered-down Enforcement Directive, a piece of legislation that was of major importance to both trademark and copyright owners.

I am not an IP lawyer or an academic - I do not know the ins and outs of every court decision or piece of legislation that is issued in Europe each year. But what I have learned over the last few years of writing about IP is that patents, trademarks and copyrights are fundamental to the success of companies wherever in the world they are based. I know that the US has done more than any other country in the world to protect the IP interests of its companies and universities, and to foster the development and exploitation of IP rights. I also know that globally the US has had by far the most dynamic economy for the last 20 years. I am pretty sure that this is not a coincidence.

John is right to say that people do not begin companies because patent protection does or does not exist in a certain field. However, very few companies based on an innovative technology can prosper and grow without IP protection. It is not just Americans working at big US universities, in Silion Valley start-ups and in major US corporations - there are many thousands of entrepreneurial and commercially-minded Europeans working in them too: Europeans who could be starting businesses here, so employing other Europeans and contributing tax money to European exchequers. But they are in the US because it is that country which as done all it can to attract them by providing the infrastructure which gives them the best chance of succeeding. It is an infrastructure that has intellectual property at its very heart. And until IP owners in Europe begin to get across that message to policy makers here, they are going to be operating at a serious disadvantage when taking on their American competition. I am afraid that complacency is not really an option.

The IPKat has no intention of taking sides in this debate --- yet. But he does feel that one of the biggest advantages that the US has over Europe is its self-confidence and belief that it can and will achieve; a ssecond advantage is in its presentational and marketing skills; a third is in its relative freedom from clogging bureaucracy. These factors would enable the US to retain its edge over Europe even if we adopted Bayh-Dole and a patent office system akin to that of the US.

This debate is not closed. Please keep sending, or posting, your comments.

Friday, 27 August 2004

The August/September 2004 issue of Legalease's bimonthly Advertising, Marketing & Branding Law Journal contains some highly attractive and relevant content. Features in this issue include
* "Copyright -- No Laughing Matter" by prize-winning essayist Timothy Pinto (Taylor Wessing), on the position of parodies under copyright law;
* "Infringement -- Divine Inspiration" by Andy Korman (Hammonds), on ways of ambush marketing ("Shame" says the IPKat);
* Internet -- All Keyed Up" by Christopher Kelly (Wiley, Rein & Fielding) on recent case law on the use of keywords in internet advertising;
* "EU regulations -- that's so unfair" by Phil Murphy of the Advertising Association, on developments relating to the Unfair Commercial Practices Directive.

Why do Commission Regulations all have "(EC) No" before the number. If, for example, people wrote "Commission Regulation 1483/2004" instead of "Commission Regulation (EC) No 1483/2004", would anyone be confused? Would any harm be caused? All over Europe -- no, all over the world -- people are having to type apparently superfluous letters. Then, when they print them out, tons of ink and cartridge powder are wasted on printing them out again. An even bigger waste of ink is the use of the title "Office for Harmonisation in the Internal Market (Trade Marks and Designs)", when "Office for Harmonisation in the Internal Market" would do just as well. Think how many typists are paid to key in these extra words every time they appear.

The IPKat wonders whether the superfluous "(EC) No" and "(Trade Marks and Designs)" are symptoms of a desire to make things look more important than they are. Readers' comments are welcome.

There's another Commission Regulation on protected geographical indications. It's the cutely named Commission Regulation (EC) No 1483/2004 of 20 August 2004 supplementing the Annex to Regulation (EC) No 2400/96 on the entry of certain names in the Register of protected designations of origin and protected geographical indications (‘Carne de la Sierra de Guadarrama’, ‘Ternera de Navarra’ or ‘Nafarroako Aratxea’, ‘Carne de Vacuno del País Vasco’ or ‘Euskal Okela’, ‘Ternera Asturiana’ and ‘Carne de Cantabria’).

The IPKat has all but given up complaining about the descriptive nature of protected GIs (Carne de Cantabria is the Spanish for "meat from Cantabria"), but he still wants to know: what do people call meat from Cantabria that doesn't fit the legal conditions for use of the GI?

The BBC reports that the Advertising Standards Authority has rapped Microsoft over the knuckles for making deceptive comparisons with Linux software. In a magazine advert, Microsoft claimed that "Linux was found to be over 10 times more expensive than Windows Server 2003" as part of its “Get the Facts” campaign. It backed this claim up with independent research. However, the ASA found that the comparison was made by running the Linux software on more expensive hardware than was necessary and this could have influenced the outcome of the analysis. Microsoft must now change its adverts.

The IPKat wonders whether the same result would have been reached if, instead of an action being brought before the ASA, Linux had brought an action for trade mark infringement. Although under s.10(6) of the Trade Marks Act 1994, parties are able to use trade marks to identify their competitors’ goods in comparative advertising, the use must be in accordance with honest practices in industrial and commercial matters. In cases such as as BA v Ryanair though, the courts have taken a liberal approach to what counts as honesty, stating that consumers expect a degree of exaggeration in advertising campaigns and they don’t expect a straightforward exact like-for-like comparison of goods or services that function entirely identically. Both of these factors are the things that tripped Microsoft up before the ASA.

Wednesday, 25 August 2004

Here's a nicely cynical piece on the Register on the explanation of the nature and effect of the computer games company NCSoft's logo (an exercise in "corporate hocus-pocus"). The IPKat is reminded of the fable of the King's New Clothes.

The IPKat humbly draws your attention to a decision of the OHIM Second Board of Appeal where Beecham unsuccessfully appealed against a decision not to register WHITENING MULTI-ACTION as a Community trade mark for goods associated with oral hygeine.

Rather candidly, not to mention worryingly, the Board admits that:

"It is familiar with the judgments of the European Court of Justice and Court of First Instance and with the decisions of the Boards of Appeal. That very substantial body of case law proves one thing above all: that trade mark examination is not as simple and straightforward as might sometimes be thought. There is no single test, no magic formula, no crystal-clear sentence, no easy-to- use puzzle solver that makes it possible to determine, without doubt or uncertainty, whether a sign is eligible for registration as a trade mark under Article 7(1)(b) and (c) CTMR".

The Board hedges its bets and then details all of the possible tests for whether a mark is descriptive or lacking in distinctiveness, and then proceeds to apply them all to WHITENING MULTI-ACTION. According to the Board though, these tests

"cannot be applied mechanically. Trade mark examination is not an exact science. It requires skill, judgment and experience of the marketplace. Sometimes there is no obviously correct answer to the question whether a sign is distinctive or not. Some signs are clearly apt to function as trade marks. Others are manifestly not endowed with that quality. In between, there are many signs that hover on the border- line. The question whether a particular sign is distinctive is not a pure question of law; it depends to some extent on what is happening in the marketplace".

In other words, trade mark examiners are very special people with unique talents –- bless!

Also of interest is the Board’s acceptance that the test for distinctiveness has moved on since the ECJ’s Baby-Dry decision and it is now necessary to look at all the case law that has followed it. As a result, any suggestion that the need to keep certain marks free for others to use should not be considered under Art.7(1)(c) is outdated.

The IPKat is rather worried by the Board’s approach. If the tests for distinctiveness and descriptiveness are really as fuzzy as the Board is suggesting, then there can be little predictability in the examination process and it is arguable that many CTM holders cannot be confident that the test has been correctly applied to their marks, leaving those marks in danger of invalidation.

Other ways to find out if your CTM will be registered here, here and here

Tuesday, 24 August 2004

IPKat's co-master Jeremy has just drafted a case note on the decision of the Court of First Instance of the European Communities in Case T-399/02Eurocermex v OHIM. This case involves an application to register, as a Community trade mark, a three-dimensional sign consisting of a glass bottle containing yellow liquid, in the neck of which is inserted a wedge of green-skinned lemon. This seems a curious sort of trade mark, since it appears to depend upon the bottle being opened and its contents being served, perhaps to the ultimate consumer. If you'd like to read it, please email the IPKat and a copy will be sent to you. All comments, however critical, will be welcome.

The IPKat is pleased to welcome Simon Gentry as his guest blogger. Simon is an activist with the outspoken and sometimes controversial Campaign for Creativity. He writes:

Has IP become industry’s achilles heel?

The Roman poet Statius (c. A.D. 45-96), tells us that, when Achilles was born, his mother Thetis tried to make him immortal by dipping him in the river Styx. As she immersed him, she held him by one heel and forgot to dip him a second time so that the heel she held could get wet too. The place where she held him therefore remained untouched by the magic water of the Styx and that part stayed mortal and vulnerable.

Over the last decade or so, we have witnessed growing concern about IP and its consequences. Biotech patents, patents on HIV treatments, patents in the software field and attempts by industry to deal with peer-to-peer file sharing are all being criticised by a growing number of groups that are unhappy with the way IP operates. IP is at best misunderstood and at worst seriously maligned. Lobby groups have correctly identified IP as a vulnerability for industry and are increasingly successful in convincing law-makers to restrict or water down IP rights in pursuit of political goals. These groups may have different objectives, but they share a common view on IP: they reject both the idea that there is an essential and fundamental “fairness” in intellectual property rights and that inventors or creators have moral right to protect "their” ideas. Ideas are free, they say, and should not be turned into a private property to be traded and enforced.

How bad is the problem? Do people in Brussels and the EU’s national capitals really believe that IP is inherently unfair? Based on the evidence the answers are: "very" and "yes". The Biotechnology Directive remains unimplemented and last year the European Parliament voted by a two-thirds majority to dramatically restrict the use of patents for computer-implemented inventions. In biotechnology, despite the fact that the EU approved the biotech patents Directive nearly decade ago, 15 EU Member States have not implemented it into national law. In this case the opponents of the technology are opposing an IP measure as a way of removing the
incentive for commercial investment in the science. They have identified
correctly that by preventing or restricting the use of IP in this field, they will stop or delay its progress. The real consequence is not that the research has stopped, but it has shifted out of Europe, mainly to the US. The same may happen on computer-implemented inventions. In the last few months the Campaign has become increasingly involved in this struggle for this Directive. A failure by the EU to approve the Directive on computer-implemented inventions, will not stop the development of new software, but it will reinforce the already dramatic imbalance between Europe and the US. Entrepreneurs and innovative software developers will have virtually no choice in where they choose to do their research and development. On the one hand will be the US with robust protection and consequent possibilities for income, and on the other will be the EU with very limited protection and therefore much more modest income potential.

You don’t need to be an IP lawyer to figure out where they will choose to work and invest. The Campaign not opposed to individuals or companies choosing not to use IP to protect their work. Companies may make an absolutely rational, commercially advantageous decision NOT to patent their work. We have no quarrel with that. We reject completely however, the attempts to prevent the use of IP in certain technologies, such as biotech or IT.

We are struggling to maintain the freedom of the creative industries to choose if and how to they want to protect their work. Our effectiveness however is largely dependent on how much active support we can generate from within the IP community. If the professionals who understand and work with the system can’t or won’t explain it, who will? And if no one is prepared or able to argue in support of IP, how can we expect the politicians and law-makers not to listen to those who lay many of the world’s ills at the system’s feet. As a leading member of the European Parliament said to me a few weeks ago, “If this is so important, why do I never hear from those who support it? I get hundreds of letters from those who oppose IP, but I never hear from those who support it!”. Indeed. The future of the IP system is in the hands of those who use it. If we don’t explain it, if we don’t lobby in support of it, we will lose it.

The Campaign for Creativity exists to explain IP, how it works and why it is essential if we are to have a fair, progressive and innovative economy in which creators are able to protect and exploit their efforts without the fear of their ideas being expropriated by others.

Both Simon and the IPKat would like to hear your views on this guest blog. If you've anything to add to the debate, please post it via the Comments facility below.

The IPKat, who is known for his elegant singing (he is a keen member of a cats' chorus for whom he has penned many kitty-ditties) is delighted to know that his rights will now be protected so well there in the future.

AuctionBytes reports that the eyewear company Silhouette is bringing an action for trade mark infringement, dilution and false advertising against two sellers on eBay before the California District Court. It has already had some degree of success against the two companies concerned in New York, where it obtained an injunction stopping them from using the SILHOUETTE mark on their eBay sites. One of the companies has admitted that it used the mark as a keyword on its site (a practice known as “keyword spamming"), even though it did not sell Silhouette products, in order to increase the number of people visiting it. eBay itself operates a Verified Rights Owner scheme (VeRO), whereby owners of IP rights can register their rights and shut down auctions that they identify as selling counterfeit items.

The IPKat says that the legal position of keyword spamming isn’t clear in the UK. It can’t really be said that the keywords are being used as trade marks for any products the spammer is using. Following Arsenal v Reed, trade mark use isn’t necessary where the goods and marks are identical though, in Reed v Reed, infringement was not found when the claimant’s mark was used in a metatag by the defendant precisely because the defendant was not using the mark as a trade mark. The IPKat urges anyone who has any experience of the legal issues involved in keyword spamming to leave a comment below.

Can't afford the Silhouette version? Try these insteadThe spam that first came with a key here

Yahoo reports that Arnold Schwarzenegger, Governor of California, has settled a publicity rights case that he brought two years ago before the US District Court of Southern California. Fred Martin Motor Company of Ohio made unauthorised use of Schwarzenegger’s name and image in advertisements for its car dealership in Akron, Ohio, much to the Terminator’s displeasure. Schwarzenegger has already reached a settlement with the advertising agency that was responsible for the campaign.

The IPKat says Schwarzenegger wouldn’t win such an action in the UK unless he could show that customers were misled by the use of his image, in which case he might succeed in a passing off action. However, if he owned the copyright in the pictures used in the advertising campaign, he may be able to stop their use that way.
Logon to one of Arnie’s official websites here here, here or hereA car fit for the Govenor here and here

The September 2004 issue of Sweet & Maxwell'sEuropean Trade Mark Reports has now been published, admirably early. The foreign-language cases made available in English in this issue are:
* Viaticum and Luteciel v Google France (Tribunal de Grande Instance de Nanterre): internet search provider liable for trade mark infringement;
* Revlon Sensor Supreme trade mark application (Patent Office, Republic of Poland): whether likelihood of confusion between SENSOR and REVLON SENSOR SUPREME.
There is a also a good selection of European Court of Justice and Court of First Instance cases (among others).
If you come across any cases that you'd like to see reported in the ETMR, write and tell us.

Saturday, 21 August 2004

Ananova reports that the Athens 2004 Olympic Committee wants the Greek version of Playboy magazine removed from the news stands. The offending publication contains unauthorised allusion to the Olympics ( for example "2004 seconds of ecstasy" and "Go for a Sexathon gold") as well as a cartoon illustration of the Olympic symbol made up of condoms. The magazine is reportedly selling well. Said a spokesman for Athens 2004:

"The issue at stake here is the protection of the Olympic symbols. There is nothing unusual about this type of action".

The IPKat wonders if it isn't about time the Olympic symbol was taken away from the International Olympic Committee and given back to ordinary people. That way its tacky overcommercialisation might be reduced and people could again use the word in its descriptive or generic sense without worrying about being sued all the time.

Nairobi Treaty on the Protection of the Olympic Symbol hereOlympic humour here and hereOlympic recipes here and here

Friday, 20 August 2004

Could anyone who knows of any European Member State trade mark dilution cases, other than those which have appeared in the European Trade Mark Reports, please let me know by emailing the IPKat at theipkat@yahoo.com. I'll be eternally grateful - and so will my thesis.

This from the Register: the Ninth Circuit Court of Appeals, San Francisco, has confirmed that P2P software such as that developed by Grokster and StreamCast is legal. Dismissing an appeal by the Recording Industries Association of America (the RIAA), the court added that The court then added that it would be unwise to alter copyright law in a way that could stifle innovation just to suit well-established players in a market, given the ways in which technology often changes the market for the better in the long run. As the court said:

"The Copyright Owners urge a re-examination of the law in the light of what they believe to be proper public policy, expanding exponentially the reach of the doctrines of contributory and vicarious copyright infringement. Not only would such a renovation conflict with binding precedent, it would be unwise. Doubtless, taking that step would satisfy the Copyright Owners' immediate economic aims. However, it would also alter general copyright law in profound ways with unknown ultimate consequences outside the present context.

Further, as we have observed, we live in a quicksilver technological environment with courts ill-suited to fix the flow of internet innovation. The introduction of new technology is always disruptive to old markets, and particularly to those copyright owners whose works are sold through well-established distribution mechanisms. Yet, history has shown that time and market forces often provide equilibrium in balancing interests, whether the new technology be a player piano, a copier, a tape recorder, a video recorder, a personal computer, a karaoke machine, or an MP3 player. Thus, it is prudent for courts to exercise caution before restructuring liability theories for the purpose of addressing specific market abuses, despite their apparent present magnitude."

The court pointed to the 1984 Sony/Betamax decision in which the Supreme Court said that a video copying device had enough non-infringing uses to warrant its existence as a legal product. Similarly, P2P software can be used to send all types of files between users. P2P software can also help reduce distribution costs and provides a new mechanism for distributing music, photos and documents.

The IPKat believes this approach is the correct one. The recording industry has genuine concerns and we would all be the poorer without it, but all players in the market for recorded works are entitled to a fair and objective interpretation of existing law, a law which is predicated by achieving a balance of interests between the industry, composers and writers and of course the consumers themselves.

Thursday, 19 August 2004

The BBC reports that there’s no rest for our patent judges. While most self-respecting IP lawyers are off on their summer hols Mr Justice Patten has granted an interim injunction in favour of Dreamworks, the studio responsible for the summer blockbusting film, Shrek 2. The 12 defendants, who remain unnamed, appear to have been offering pirated Shrek 2 DVDs of varying quality on auction websites such as eBay. The official DVD launch date of the film is scheduled for November.

The IPKat says no surprises here really. Everyone knows selling copyright infringing DVDs is naughty and can get you into trouble. He awaits the sport of a potential full trial.

The Register pours vast quantities of scorn on a chancer by the name of Robert-Alan Lucht, who is invoicing his victims for annual licences to use the @ sign, in which he purports to own the international copyright. The “licence” covers internet and email use. The annual sums demanded are 30 euro for regular use, 20 euro for educational use and 10 euro for private use.

The IPKat is part appalled, part entranced. This ploy would appear to set new standards for brazen chutzpah. He would like to know, though, of any country in which an attempt to extract royalties from internet and email users for alleged copyright infringement is itself a legal wrong. Can any IPKat browsers oblige?

Stop press (Friday 20 August): The IPKat has just received from one of its readers this link to a US trade mark for a rather attractively sexed-up version of the @ sign. Thanks for sending it in, John.

Wednesday, 18 August 2004

Do you find you just can’t get the words out? The English language is woefully inadequate and the rules of grammar don’t make an awful lot of sense do they? Than goodness we have concerned citizens like Leonard Storch, Ernst van Hagen and Sigmund Silber. “Who?” the IPKat hears you ask. Well, these three linguistic lads filed this month’s patent of the month (courtesy of patentoftheweek.com), an application for “Two New Punctuation Marks: the Question Comma ? and the Exclamation Comma !” These gramatic gremlins are designed to allow those writing to express a greater degree of inquisitiveness and feeling respectively so as to more closely reflect spoke language.

As part of the IPKat's service to the intellectual property community, this blog will be bringing you occasional news of interesting IP jobs. Here's a teaching/research fellowship at the University of Paisley's Business School. The job spec says:

Working independently and with the Law group to develop research and teaching in law you will contribute to core teaching on the undergraduate law programme as well as teaching law on other courses. An ability to teach in some of the following would be an advantage: European, Criminal, Family, Intellectual Property or Information Technology Law. With an Honours degree and/or professional qualification in Law you will ideally hold or be nearing completion of a PhD in a relevant area.

Tuesday, 17 August 2004

PIS, or Product & Image Security, is a magazine that might interest those IPKat readers who have to face serious copying and counterfeiting issues on a day-to-day basis and who prefer to rely on technical solutions rather than spend all their money on legal fees. Published six times a year by ECI International, PIS carries news and articles on smart labels, cryptography, security systems for software, tagging and tracing as well as significant legal decisions. There's also plenty of highly-focused and (for once) useful and interesting advertising.

Today's Daily Mailreports that British roadside restaurant chain Little Chef has confirmed that its well-known logo, depicting a plump chef in some 375 locations around the British Isles, is to be put on a diet. The company has commissioned a slimmed down version of the chef character without his tummy, apparently in response to the growing awareness of healthy eating.

According to Tim Scoble, chief executive of Little Chef:

"We get accusations that he's overweight, so he's going to lose his paunch."

A company spokesman confirmed that new designs had been drawn up and said that customers would be asked their views. Scoble however warned that the future of the logo, which has been used for the past 32 years, was far from assured.

"There would be an uproar from our customers if we got rid of it completely. It won't go in the next 18 months but in two or three years' time we'll look to see whether it remains part of our branding."

The IPKat wonders whether a change to the restyled, slimmed-down chef would actually produce the opposite result: the current fat chef is at least a visual warning to consumers that if they eat lots of Little Chef food they can expect to fatten up. A slimline chef might put into their minds the notion that this otherwise expected event would not occur. More importantly, Little Chef should remember to ask about the underlying trade mark issues: will they need to apply to register the fresh logo and will use of the skinny chef still count as use of the registered fat one, if the mark should be faced with an application for revocation?

The IPKat brings you news of an interesting UK Trade Mark Registry decision. The band Linkin Park applied to register LINKIN PARK as a trade mark for printed matter, posters and poster books in Class 16. Objections were raised based on lack of distinctiveness under s.3(1)(b) of the Trade Marks Act 1994. It was also argued that the mark designated a characteristic of the goods, viz, the band featured in the posters. Linkin Park argued that, following the ECJ’s ruling in Arsenal v Reed, the registration of a distinctive mark is legitimated wherever the mark owner can be expected to profit from the use of the mark on such goods or in connection with such services and to suffer economic detriment if such use by others was permitted.

The application was refused on both grounds of objection:

* The mark was excluded from registration under s.3(1)(c) of the TMA since it designated a characteristic of the goods. Following Advocate General Jacobs’ Opinion in OHIM v Zapf creation it could be said that the particular purchasers purchased particular posters because the name LINKIN PARK represented the band who produced music to which the purchaser enjoyed listening. The name LINKIN PARK appearing on the posters was the subject matter of the goods which was an essential characteristic of such goods. However, the same was not true of the ARSENAL name when used in relation to articles of clothing.
* The Court of Appeal’s Arsenal v Reedjudgment was not relevant because that was an infringement action postulated on the footing that the ARSENAL trade mark was validly registered. Although the validity of the registration of ARSENAL for scarves and shirts had been discussed in the High Court, this did not mean that ARSENAL could be validly registered for posters and poster books.
* There was likely to be a wide demand for posters bearing the name LINKIN PARK since it was the name of a well known band with an established following in the UK. Third parties could legitimately enter such a trade. Third parties can legitimately take photographs of celebrities and will own the copyright in those pictures. It was essential for those parties to be able to use the LINKIN PARK name in order to trade in the pictures in the form of posters.
* Additionally, the mark was not distinctive for the purposes of s.3(1)(b) TMA since the average consumer would not see the mark as indicating trade origin as it was common practice for third parties to market and trade in posters and poster books which carry the name of a music band. LINKIN PARK was not distinctive enough as a combination to bestow distinctiveness on the mark as a whole in order to distinguish Linkin Park’s goods from those of other traders.

The IPKat can’t say he’s surprised by this decision. There’s a proud history in the UK of deciding that consumers will not perceive memorabilia as originating with the person or organisation that it commemorated by it. This is self-perpetuating since if “unauthorised” uses continue to be allowed then consumers will assume that authorisation is unnecessary for memorabilia to come on to the market. Linkin Park can’t have been helped here by their representative’s enormously wide reading of Arsenal v Reed.

Monday, 16 August 2004

AdAge reports that an American company is using currency for its adverts. Boodle, an online coupon company, is affixing circular inserts featuring its trade mark and a slogan on the back of 25 cent pieces which it will leave in the returned change slots of vending machines, payphones and the like. The inserts are removable to avoid damaging US currency, which is an offence in the States.

The IPKat says, are there no limits to where those intrepid little trade marks will get to?

Saturday, 14 August 2004

The BBC reports that Microsoft has issues a “take down” notice under the Digital Millennium Copyright Act (DMCA) to the file-swapping activists Downhill Battle. The activists began distributing Microsoft’s SP2 security update package through peer-to-peer file-sharing networks in order to demonstrate the potential of the medium for distributing such programs to a mass-market. Said the group

"This project shows how file-sharing technology gives people without budgets or huge server space the power to solve problems themselves, without waiting for the government or some corporation to do it for them."

The version they were distributing was intended for corporations who will install it on multiple PCs. A slimmed down version will be made available for home PC users in the near future.

The IPKat says, while Downhill Battle’s aims may have been laudable, this does not give them the right to ignore the IP rights of the developers of the patch, Microsoft, especially since Microsoft did have plans to distribute it in a way that would be accessible to all.

Friday, 13 August 2004

While the IPKat was away on his holidays, the United Kingdom's Patent Office posted the text of the new Patents Act 2004.

Patent Office collection of websites on the history of the Bill here. Text of the underlying Patents Act 1977, which the 2004 Act amends, here. Wacky patent of the month here. More sensible inventions here.

The European Commission has given its blessing to the protection of the term "Scottish Farmed Salmon" as a protected geographical indication (PGI) for Scottish farmed salmon. This is one of seven new notifications by national governments under Article 5 of Regulation 2081/92.

The IPKat can't help feeling that "Scottish farmed salmon" is a desperately descriptive term: how will producers of salmon that is farmed in Scotland, but which falls outside the scope of the officially sanctioned process attached to the PGI, be able to tell consumers that their salmon has been farmed in Scotland?

Why no-one should eat Scottish farmed salmon here; why it may be worth taking a chance to do so hereSalmon recipes here; leftover salmon here; non-farmed salmon here; how to catch salmon here; talking salmon here; how to play Russian roulette with mutant salmon here; most famous salmon song-title pun here

Thursday, 12 August 2004

Trade mark owners who complain that their trade marks are seized by the public and turned into pejorative terms should check out Wordspy. This site lists neologisms and terms that incorporate trade marks in just such a manner. The IPKat wonders what Pfizer would make of the term "Viagra divorce", defined as

"A divorce granted on the grounds that a husband is behaving aggressively or unfaithfully after taking Viagra or some other anti-impotence drug".

There's not much a trade mark owner can do about this, since there's no legal remedy he can enforce against the public at large for the "tort" of linguistic development.

The BBC reports that Microsoft is planning to launch a cheaper, slimmed down version of its XP operating system, dubbed “XP Lite”. The programme, which will have lower resolution graphics and limited options for networking computers together and can only run 3 programmes at once, is an attempt to deter those who find full XP too expensive from buying pirated copies and to prevent the much cheaper Linux from getting the upper hand in the Asian market. XP Lite is due to be issued in Thailand, Malaysia, Indonesia and two other undisclosed Asian countries.

The IPKat sees trouble ahead. He imagines that there will be many Windows users in developed countries that would welcome a cheaper XP package, even if it means sacrificing a degree of functionality. He guesses that Microsoft will have installed some sort of DRM measures to prevent the software from being used in developing countries and thinks it’ll only be a matter of time become someone attempts to decrypt it, which will make Microsoft very, very angry.

The IPKat says this shows that the ideal conditions for DVD piracy have been created: (i) a high level of demand for (ii) a film on current release (iii) which can't actually be seen by most of the people who want to see it, in (iv) a technologically sophisticated jurisdiction (v) where there are channels through which unlawful products can easily and profitably be distributed.

Wednesday, 11 August 2004

From today's Telegraph we learn that French carmaker Peugeot has failed in its attempt to force independent car dealers to redecorate their forecourt colours in Peugeot corporate blue. The 260 independents complained through the National Franchised Dealers Association to the Office of Fair Trading in February, pointing out that it would cost them an average of £25,000 each to do the respray, which might result in the unwanted consequence that car-buyers, seeing them as Peugeot dealers, would be deterred from buying other makes of car they were selling. Now that the OFT has upheld their complaint, Peugeot has conceded that its 'blue box' livery is not mandatory but merely "highly recommended".

The IPKat is delighted with this outcome for two reasons. First, dealers can paint their forecourts whatever colour they want, freee from the shackles of what appears to be mindless corporate conformity. Secondly, Peugeot's blue will be associated principally with Peugeot and not with the sale of rival makes of car, thus making the colour more distinctive of that company's products. This might be handy when it comes to registering the col0ur as a trade mark or preserving the validity of such a registration.

BBC reports on a battle in the offing between French-owned mobile phone giant Orange and easyJet founder Stelios Haji-Ioannou over the right to use the colour orange when marketing mobile phone services. Stelios' latest venture, easyMobile, is set for a launch later this year: he expects it, in common with all his other "easy" ventures, to make use of the "easy" orange by which they are so easily identified. Orange maintain that this will confuse customers.

The IPKat wonders whether the shared use of the colour orange would in practice lead anyone to be confused, given the high degree of reliance that consumers place on other things, such as word marks, when deciding which mobile services to opt for.

Tuesday, 10 August 2004

A blueprint to crackdown on the trade in fake goods was launched today by Industry Minister, Jacqui Smith, as she unveiled the UK's first intellectual property crime strategy. Intellectual property crime cheats consumers, costs jobs and helps fund organised crime. Piracy and counterfeiting, including DVDs, perfumes, clothing and alcohol, costs the UK economy billions of pounds and undermines the success of many of the UK's best companies.

Today's national strategy, developed by the Patent Office, brings
together brand owners, police, trading standards and customs to

* increase the sharing of intelligence between different agencies; * improve training for those working at the front-line;
* better co-ordinate the agencies involved in the fight against
intellectual property crime and
* monitor progress and success by publishing an annual national enforcement report.

Jacqui Smith, Industry Minister, said: "Pirates and bootleggers cheat consumers and place a drain on our economy. We cannot and we will not simply turn a blind eye to copyright and trade mark crime. "Intellectual property crime is not victimless. As well as cheating consumers, the trade in counterfeit goods costs UK companies billions of pounds and thousands of jobs every year. That is why we are working together with industry and law enforcement agencies to clamp down on this illegal trade."

Lord Sainsbury, Minister for Science and Innovation, said: "I am greatly heartened by the speed with which the Patent Office has been able to pull together such a broad range of interests so quickly to deliver this important strategy. Clearly a common purpose is shared by the police, customs, trading standards and many brand owners to co-ordinate their efforts to best effect. This bodes well for our fight against IP crime."

The chairman of EMI Group, Eric Nicoli, is the music industry
representative on the Government's recently founded Creative Industries IP Forum. He said: "We are very encouraged that the Government is taking steps to help Britain's creative industries tackle the theft of intellectual property and we welcome this latest enforcement initiative from the Patent Office."

Bryan Lewin, TSI Lead Officer for Intellectual Property at the Trading Standards Institute said: "Counterfeiting is a global business run by highly-organised serious criminals using it as a low-risk way of laundering money and raising funds for other criminal activities. To tackle crime at this level, Trading Standards, the industry and other enforcement agencies must adopt an equally organised and co-ordinated approach. The National IP Crime Strategy will help to achieve this objective."

The Anti-Counterfeiting Group is one of the many organisations working with the Patent Office. ACG Director General Ruth Orchard said: "Rights owners estimate that last year alone counterfeiting and piracy cost the UK economy £10 billion and 4,000 jobs. With this strategy in place, and the goodwill fostered by all the partners, we have a real chance to take the fight back to the criminal gangs who are defrauding consumers and rights owners."

The IPKat can't help being somewhat cynical in the face of this sudden determination to fight IP crime. The case for fighting fakes and those who make them is no stronger now, in moral, economic or social terms than it has been been for the past 30 years, during which time the needs and interests of IP owners and consumers have been routinely ignored. Is it because the government has finally woken up to the amount of tax it loses? Or because the ties between illicit trade and terrorism -- or at least a serious risk that they exist -- now give more cause for concern? Until actual resources are pumped into the fight on fakes, and IP owners are relieved of the almost exclusive responsibility of having to police their own rights, the IPKat will be reluctant to believe that anything has changed.

This blog is devoted to things you would have read about last week, if the IPKat hadn't gone on holiday.

* Yet another top-level domain. The new .eu domain, for use by European Union residents and businesses, is set to be introduced in late 2004. EURid, a consortium of several European country code-naming authorities, has been appointed to run the domain. The domain is expected to be launched with a "sunrise period" approximately 8-9 months after contracts are signed with the Commission and the Sweet & Maxwell. It includes "Advertising, Publicity Rights and English Law" by Hazel Carty, "From Entertainment to Education: the Scope of Copyright" by Charlotte Waelde and Hector MacQueen, a good piece by Geroge Wei on database right and telephone directories as well as a feature by Christian Rütz on parody.

* Bad faith. In Harrison v Teton Valley Trading Company (the CHINA WHITE case) the Court of Appeal for England and Wales has confirmed, after a review of earlier case law, that a trade mark application may be regarded as having been made in bad faith even if it has not been made dishonestly. Judgment was given by the recently-retired but apparently still active Lord Justice Aldous.

* Claim construction. In Unilin Beheer BV v Berry Floor NV, another Court of Appeal decision, Lord Justice Jacob delivered some further advice on the interpretation of technical terms in a patent claim by the notional person skilled in the art. In this case the term was "free of play", which had been used in respect of floor panels. Cases of this nature appear to the IPKat to be based as much on canons of common sense as upon fixed and immutable rules of interpretation. Accordingly, he doubts whether they are of any particular precedental value.

* Translation watch. The Court of First Instance decisions which, the IPKat complained, had not been translated into English before he went on holiday remain obdurately untranslated. So too does the Opinion of the Advocate General in Case C-245/02 Anheuser-Busch, which was handed down on 29 June. This case is available in just seven languages.

Monday, 9 August 2004

The BBC reports that comedian Jimmy Carr is claiming that follow comic Jim Davidson “stole” a joke of his that he told during the 2002 Royal Variety Performance and is threatening legal action. The joke, which Davidson told during his ‘Jim Davidson on the Road’ programme goes as follows:

"Someone came up to me last week and complained about a joke, quite a big-boned girl.
She said: "I think you're fattist." I said: "No, I think you're fattest".
Davidson’s manager is downplaying the claim, saying that the similarity of the two jokes was coincidental and in any event, the joke has “been around for ages” and was only one line in a fifty minute routine.

The IPKat thinks the copyright implications of joke theft are quite intriguing. Is a one-liner to be considered to be a protectable work in itself or will it be seen as part of a routine? In the latter case it would have to be found as a substantial part of the original user’s routine to be considered infringing.
More stolen jokes here, here and here (no, it's not him...I don't think)

After his visits to Catford, Katmandu, the Catskills, Mousehole and Catalonia (having avoided the Isle of Dogs, Dalmatia, Alsatia and Labrador), the IPKat is back in town. Duly refreshed, he's ready to resume his blogging activities. Be sure to follow him in his trek through the peaks and troughs of intellectual property law and practice.

Sunday, 1 August 2004

... is on holiday this week. He will be back, purr-fectly rested, next Sunday, 8 August, to bring you the latest news from the exciting world of intellectual property.The IPKat would like to take this opportunity of thanking you, his readers, for your enthusiasm, your comments and your commitment to IP over the past 13 months since he started blogging. It has been a pleasure blogging for you.

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